Disclaimer

"Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.

May 24, 2016

AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016)

On May 4, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a Covered Business Method (CBM) patent review in a proceeding between AT&T Mobility and Intellectual Ventures, based on U.S. Patent No. 5,339,352. This is another useful decision by the PTAB placing boundaries on patents that are eligible for CBM review requiring more than a mere example in the specification mentioning a financial activity.

AT&T filed a petition to institute a CBM patent review of claims 1, 2, 5, and 9 of the '352 patent. Ultimately, the PTAB found that the information presented in the petition did not establish that the '352 patent qualifies as a CBM patent for purposes of section 18(d)(1) of the Leahy-Smith America Invents Act ("AIA").

The '352 patent discloses systems and methods for providing Directory Assistance Call Completion ("DACC") services to cellular telephone users. One embodiment of the '352 patent provides a system that implements a DACC service for cellular subscribers in which a mobile telephone switching office or "MTSO" is owned and operated by the cellular carrier and provides a switched connection point between the network operated by the cellular carrier and the landline telephone network. The MTSO connects to an operator service system (OSS) that functions as a directory assistance service system. According to the '352 patent, any existing interconnection between MTSO and OSS is replaced with dedicated trunk, and use of a dedicated trunk serves as a means for OSS to identify the carrier and to determine whether the caller can use directory assistance. The dedicated trunk has an area code and exchange number (referred to as the NPA-NXX). The NPA-NXX of the dedicated trunk is also the NPA-NXX of the wireless switch, e.g., MTSO, and because the trunk has a fixed location, the NPA-NXX of the dedicated trunk provides present location information for the calling wireless customer. Therefore, OSS can use the NPA-NXX of the dedicated trunk, rather than the received calling number (ANI), to check eligibility for directory assistance and calculate charges for call completion based on the location.

Claim 1 is illustrative of the challenged claims and is reproduced below:

1. A method of providing a directory assistance call completion service to a wireless communication service subscriber comprising: receiving a request for directory assistance from a wireless communication terminal at a mobile communications switching office; forwarding data identifying the wireless communication terminal from the mobile communications switching office to an operator service system; establishing a landline communication link between the mobile communications switching office and the operator service system to provide two way communications between the wireless communication terminal and the operator service system; receiving information from the wireless communication terminal identifying a particular listing from a directory of listings; retrieving a destination number corresponding to the identified listing; receiving a request for completion of a communication link between the wireless communication terminal and a station identified by the destination number; establishing a landline communication link to provide a complete communication connection between the wireless communication terminal and the identified station; and recording the identity of the wireless communication terminal in the operator service system.

Qualifying as a CBM Patent for CBM Review?

The AIA defines "covered business method patent" as "a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions." AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).

To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims, and a patent need have only one claim directed to a covered business method to be eligible for review.

AT&T contends the '352 patent is a covered business method patent because the '352 patent specification and claims "are directed to collecting and recording data (e.g., the identity of a wireless caller) for billing for call completion services from an OSS." AT&T relies on the last limitation of claim 1 to support its position, arguing that the step is performed for the purpose of "recording the identity of the wireless communication terminal in the operator service system" for use as billing information by the operator services.

The PTAB stated that the claims are devoid of any terms that reasonably could be argued as rooted in the financial sector or directed to a financial transaction. Additionally, although statements in the specification that a claimed invention has particular utility in financial applications may weigh in favor of determining that a patent is eligible for CBM patent review, here, the PTAB did not find CBM review available for claims directed to generally useful technologies that also happen to be useful to financial applications.

The PTAB acknowledged that the specification includes at least one illustrative embodiment directed to an application of the claimed method for billing purposes, but found that such an example is insufficient to make the challenged claims of the '352 patent eligible for CBM patent review. The PTAB explained that mere ability to use the claimed invention in a financial context, standing alone, does not require a finding that the financial prong has been met, especially when the specification as a whole suggests a broader application.

The PTAB concluded that the challenged claims recite a method of general utility for providing a directory assistance call completion service to a wireless communication service subscriber, and the cited example from the '352 patent makes clear that any financial aspect of the invention as discussed in the specification is, at most, a non-limiting example.

Claims Reciting "billing" Disclaimed

In a strategic move, IV had filed a statutory disclaimer under 37 C.F.R. § 1.321(a) of claims 2, 3, 7, and 17, which recited to form a "billing record" and "accounting data". The PTAB noted that it is treated as though the disclaimed claims never existed, and thus, this removed any possible financial language in nature from the claim set. As a result, the claims were better positioned to survive the CBM challenge.